Ex Parte Wu et alDownload PDFPatent Trial and Appeal BoardDec 22, 201612811750 (P.T.A.B. Dec. 22, 2016) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/811,750 09/21/2010 Jung-Sheng Wu 63857US012 1059 32692 7590 12/27/2016 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER KHAN, AMINA S ART UNIT PAPER NUMBER 1761 NOTIFICATION DATE DELIVERY MODE 12/27/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUNG-SHENG WU and RAGHUNATH PADIYATH Appeal 2016-001087 Application 12/811,750 Technology Center 1700 Before CHUNG K. PAK, JEFFREY T. SMITH, and WESLEY B. DERRICK, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1 through 17.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The subject matter on appeal is generally directed to a dispersion comprising an organic solvent, agglomerates of nanoparticles, and a polycaprolactone-polyamine copolymer. (Spec. 1 3.) 1 Appellants identify the Real Parties in Interest as 3M Company and 3M Innovative Properties Company (Appeal Brief filed March 12, 2015 (“App. Br.”), 2.) 2 Final Office Action entered September 25, 2014 (“Final Act.”), 2. Appeal 12/954,091 Application 2015-004058 Details of the appealed subject matter are recited in representative claim 1, which is reproduced below from the Claims Appendix to the Appeal Brief: 1. A dispersion comprising: about 15 wt% to about 50 wt% of at least one organic solvent based on the total weight of the dispersion; about 50 wt% to about 80 wt% of agglomerates of nanoparticles based on the total weight of the dispersion, wherein the nanoparticles are infrared absorptive, conductive or both infrared absorptive and conductive; and about 0.5 wt% to about 25 wt% of at least one polycaprolactone-polyamine copolymer based on the total weight of the dispersion, wherein a majority of the agglomerates have an average diameter that is not greater than 100 nanometers, and wherein the dispersion is stable at room temperature for at least one month. (App. Br. 12.) Appellants seek review of the Examiner’s final rejection of claims 1—17 under 35 U.S.C. § 112, first paragraph for failing to comply with the written description requirement, which the Examiner maintained in the Answer entered on August 28, 2015 (“Ans.”). DISCUSSION Upon consideration of the evidence on this appeal record in light of the arguments advanced by the Examiner and Appellants, we determine that Appellants have identified reversible error in the Examiner’s rejection of claims 1—17 under 35 U.S.C. § 112, first paragraph, for failing to comply with the written description requirement. Accordingly, we reverse this 2 Appeal 12/954,091 Application 2015-004058 rejection for the reasons set forth in the Appeal and Reply Briefs. We add the discussion below primarily for emphasis and completeness.3 In rejecting claims for failure to comply with the written description requirement of § 112, first paragraph, the Examiner bears the initial burden of establishing that the original disclosure in the Specification, claims, and drawings, as a whole, would not have reasonably conveyed to those skilled in the art that Appellants had possession of the subject matter of the appealed claims, at the time the Application was filed. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc); In re Alton, 76 F.3d 1168, 1172, 1175-76 (Fed. Cir. 1996) (citing In re Wertheim, 541 F.2d 257, 262—64 (CCPA 1976)). The written description in the original disclosure as a whole does not have to describe the invention later claimed in haec verba. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir. 1991); Wertheim, 541 F.2d at 262 (“The function of the description requirement is to ensure that the inventor had possession, as of the filing date of the application relied on, of the specific subject matter later claimed by him; how the specification accomplishes this is not material.”) (citations omitted). Compliance with § 112, first paragraph, written description requirement, is a question of fact and is determined on a case-by-case basis. Vas-Cath, 935 F.2d at 1562—63. Here, the Examiner finds that the weight percentage of agglomerates of nanoparticles recited in claim 1 “does not have basis in the original specification or claims” because the Specification and original claims set 3 For the purposes of this appeal, we select claim 1, the broadest claim on appeal, as representative, and decide the propriety of the rejection of claims 1—17 under 35U.S.C. § 112, first paragraph for failing to comply with the written description requirement based on claim 1 alone. 3 Appeal 12/954,091 Application 2015-004058 forth the percentage of nanoparticles, rather than agglomerates of nanoparticles, in the claimed dispersion. (Ans. 2.) However, the Specification discloses that the dispersion includes, inter alia, “about 5 wt% to about 80wt% of nanoparticles” based on the total weight of the dispersion. (Spec. 3—6.) Subsequent sentences refer back to such nanoparticles in the dispersion by using the definite article “the” in reference to nanoparticles.4 (Id.) These sentences describe the nanoparticles—previously mentioned nanoparticles in the dispersion—as infrared absorptive, conductive or both infrared absorptive and conductive particles and as “agglomerates of the nanoparticles[,]” with the majority of the agglomerates having an average diameter of not greater than 100 nanometers. (Id.) Stated differently, the nanoparticles in the dispersion are infrared absorptive and/or conductive particles in the form of agglomerates, with the majority of the agglomerates having an average diameter of not greater than 100 nanometers. (Id.) The Specification also discloses that such infrared absorptive or conductive particles can be employed in a range of from about 5 wt% to about 80 wt% or about 50 wt% to about 70 wt% based on the total weight of the dispersion. (Id. at || 40-41.) From these original disclosures of the nanoparticles in the dispersion in the Specification, one of ordinary skill in the art would have reasonably understood that the nanoparticles in the dispersion are agglomerated nanoparticles which can be used in the range of about 50 wt% to about 80 4 Lynn Quitman Troyka, Quick Access Reference for Writers, Fifth Edition (2007) p. 390 (“Geraldo planted tulips and roses this year. The tulips will bloom in April. The plural count noun tulips is used in a general sense in the first sentence, without the. Therefore, the second sentence refers to them specifically as the tulips.”) (Emphasis original.) 4 Appeal 12/954,091 Application 2015-004058 wt% based on the total weight of the dispersion. Wertheim, 541 F.2d at 264— 65 (explaining that Appellants claiming a narrower range within the broader range disclosed in the Specification as originally filed does not generally violate the written description requirement unless, “on the facts, the PTO has presented sufficient reason to doubt that the broader described range also describes the somewhat narrower claimed range[,]” with a subsequent finding that the solids content range of “between 35% and 60%” recited in a claim is supported by the original disclosure of Appellants’ invention employing solids contents within a broad “range of 25—60% along with specific embodiments of 36% and 50%”); Ex parte Jackson, 110 USPQ 561 (BPAI 1956) (explaining that exemplified values in the Specification, as originally filed, can be used to derive a range of such values without violating the written description requirement). Accordingly, on this record, the Examiner has not demonstrated that the original disclosure of the Specification as a whole does not reasonably convey to those skilled in the art that the inventors had possession of a dispersion comprising about 50 wt% to about 80 wt% of agglomerates of nanoparticles, as recited in claim 1, at the time the Application was filed, within the meaning of 35 U.S.C. § 112, first paragraph. DECISION In view of the reasons set forth in the Appeal Brief and above, the Examiner’s rejection of claims 1—17 under 35 U.S.C. § 112, first paragraph, is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation